Disney Enterprises, Inc.

Patent Trials and Appeals BoardApr 15, 2021

2019006988 (P.T.A.B. Apr. 15, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/069,623 03/14/2016 Albert Cheng 0260296C1 1425 63649 7590 04/15/2021 DISNEY ENTERPRISES, INC. C/O FARJAMI & FARJAMI LLP 26522 LA ALAMEDA AVENUE, SUITE 360 MISSION VIEJO, CA 92691 EXAMINER ALATA, YASSIN ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 04/15/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@farjami.com farjamidocketing@yahoo.com ffarjami@farjami.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERT CHENG Appeal 2019-006988 Application 15/069,623 Technology Center 2400 Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 21–26 and 39–44, which are all of the claims pending in the application. Appeal Br. 2. Claims 1–20 have been canceled. Id. at 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Disney Enterprises, Inc., a wholly owned subsidiary of The Walt Disney Company.” Appeal Br. 2. Appeal 2019-006988 Application 15/069,623 2 TECHNOLOGY The claimed subject matter relates to synchronizing on-air commercial programming with interactive applications. Spec. Title. ILLUSTRATIVE CLAIM Claim 21 is illustrative and reproduced below with the limitations at issue emphasized: 21. A method for use by a server for synchronizing an interactive social game with a broadcasting of an on-air commercial programming, the method comprising: receiving, by the server from each of a plurality of client devices over the Internet, information indicative of a beginning of the broadcasting of the on-air commercial programming after a broadcasting of an on-air regular noncommercial programming by a broadcaster for televisions, wherein audio or visual signals of the beginning of the broadcasting of the on-air commercial programming emitted by the televisions are detected by each of the plurality of client devices to indicate the beginning of the broadcasting of the on-air commercial programming; in response to receiving the information from each of the plurality of client devices indicative of the beginning of the broadcasting of the on-air commercial programming by the broadcaster, the server starting the interactive social game over the Internet for playing by a plurality of users on one of the plurality of client devices independent of the televisions, wherein the interactive social game is played on the plurality of client devices, and not the televisions; during the broadcasting of the on-air commercial programming by the broadcaster for the televisions, the server determining a winner of the interactive social game among the plurality of users playing the interactive social game; during the broadcasting of the on-air commercial programming by the broadcaster for the televisions, the server providing a prize to the winner of the interactive social game; and Appeal 2019-006988 Application 15/069,623 3 terminating, by the server, the interactive social game being played on the plurality of client devices in synchronization with a return to the broadcasting of the on-air regular noncommercial programming by the broadcaster for the televisions. REFERENCES The Examiner relies on the following references as prior art: Name Reference Date Cai US 6,678,890 B1 Jan. 13, 2004 Covell US 2007/0130580 A1 June 7, 2007 Mallinson US 2011/0247042 A1 Oct. 6, 2011 Meadows US 2004/0255322 A1 Dec. 16, 2004 Richard US 2012/0174146 A1 July 5, 2012 REJECTIONS The Examiner makes the following rejections under 35 U.S.C. § 103: Claims References Final Act. 21, 23, 24, 26, 39, 41, 42, 44 Cai, Mallinson, Richard 4 22, 40 Cai, Mallinson, Richard, Meadows 7 25, 43 Cai, Mallinson, Richard, Covell 7 ANALYSIS Appellant argues that Cai and Mallinson fail to teach the first two steps of claim 21 (the “receiving” and “in response to receiving” steps) and that the Examiner failed to provide sufficient reason to combine Cai and Mallinson. Appeal Br. 7–13. For the first prior art reference, the Examiner finds “Cai discloses starting [a] quiz when the commercial airs.” Ans. 6 (citing Cai 8:35–42, 9:10–21). “The quizzes are outputted on the screen of the receiver [e.g., each user’s TV] and the audience makes a response using a remote controller.” Id. at 5 (citing Cai 4:58–5:15, 8:17–35, 9:10–21, Fig. 3). Appeal 2019-006988 Application 15/069,623 4 For the second prior art reference, the Examiner finds “Mallinson discloses that a user device [e.g., a cell phone or tablet] can record audio/video information from a device [e.g., a TV] and upload the information to a server to identify media [e.g., a commercial] and provide supplemental content to the user” on the user device. Ans. 6 (citing Mallinson ¶¶ 21–26). Thus, Cai teaches detecting a commercial and playing a game on the television, so the Examiner’s proposed modification relies on Mallinson for instead detecting a commercial on Mallinson’s user device, such as a cell phone or tablet, and playing Cai’s game on Mallinson’s user device. Although we agree with the Examiner (Ans. 7) that Appellant argues the references individually and that the combination of references teaches or suggests all limitations of the claim, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 418–19. Here, the only reason to combine Cai with Mallinson that the Examiner provides is “to identify broadcast media and provide the user with supplemental content.” Final Act. 6; Ans. 7. However, we agree with Appellant that this reason is unrelated to the proposed modification, which instead relies on Mallinson’s use of a user device separate from the TV and set-top box. Appeal Br. 11–12 (“what is missing from Cai is not content identification” but rather detecting “by a user device”). Further, both Cai and Mallinson teach “to identify broadcast media” and to “provide the user Appeal 2019-006988 Application 15/069,623 5 with supplemental content” (e.g., Cai’s quiz during a commercial break). Ans. 4–6; Appeal Br. 8–9 (Cai), 9–10 (Mallinson), 11–12 (challenging reason to combine). Therefore, the Examiner has not yet provided sufficient reason why a person of ordinary skill in the art would have had reason to modify Cai with Mallinson in the specific way proposed by the Examiner (e.g., to play Cai’s game on Mallinson’s user device). Although such reasons may well have existed (e.g., to provide the game via an easily- downloaded app on a cell phone when a TV or set-top box does not support the game), the Examiner has not yet articulated such reasoning. Accordingly, we do not sustain the Examiner’s rejections of independent claims 21 and 39 and their dependent claims 22–26 and 40–44. OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 23, 24, 26, 39, 41, 42, 44 103(a) Cai, Mallinson, Richard 21, 23, 24, 26, 39, 41, 42, 44 22, 40 103(a) Cai, Mallinson, Richard, Meadows 22, 40 25, 43 103(a) Cai, Mallinson, Richard, Covell 25, 43 Overall Outcome 21–26, 39–44 REVERSED